Design. Industrial Design. Copyright in Industrial Design. Failure to register under the Designs Act, 2000. Effect and consequenses in case of copying-Delhi High court

CS(COMM) 1419/2016 and IA No. 1375/2014 (O 39 R 1& 2 CPC)

HOLLAND COMPANY LP AND ANR.  ..... Plaintiff  Vs. S.P. INDUSTRIES..... Defendant

The above suitwas filed by the Plaintifffor permanent injunction restraining infringement of copyright, rendition of accounts and damages, along with an application under Order 39 Rules 1 and 2 of CPC seeking injunction to restrain the Defendant from manufacturing or selling Automatic Twist Lock (“ATL”) and spare parts, as well as to restrain the Defendant from reproducing the ATL spare parts in 3-D form, from the 2-D artistic work of Holland Company LP in the form of the industrial drawings, in which the Plaintiff have claimed themselves to be the owner of industrial drawings of ATL system for securing cargo containers.The Plaintiff claimed that the drawings of ATL device along with its component, are the original Artistic Work and Plaintiff are the owner of copyright of these industrial drawings.The Plaintiff also claimed that the Defendant did not have necessary know-how to replace and repair the spare parts of ATL device supplied by the Plaintiff to Indian Railways.

Defendant alleged that the drawings of the spare parts of ATL are readily available as it is a public document and were published by Indian Railways. That the Plaintiff also contended that Defendant being in the same trade, aware of such publication has copied the drawings of the Plaintiff and also procured the Plaintiff' product and spare parts and prepared the drawings for manufacturing the ATL devices and its spare parts, by using reverse engineering and/or by copying and using unauthorizedly the said drawings.

The Plaintiff claimed that the drawings of ATL device and of its parts belong exclusively to the Plaintiff and that it is an artistic work in which Plaintiff have copyright.

On the other hand, the Defendant submitted that the Plaintiff have no copyright in the industrial drawings. It is submitted that by virtue of Section 15 of Copyright Act, 1957, no copyright exist in any drawing or design once the production has been done more than 50 times by an industrial process using such drawing or design.

It was further submitted by the Defendant that the Plaintiff have themselves admitted that they have supplied ATL devices to the Railways and thus by using drawing they have reproduced more than 50 articles, because of which the Plaintiff cannot be said to have exclusive intellectual property right over the said drawings since these drawings have been published and are readily available in the market.

The Hon’ble Court while deciding the said application observed as under:

When the tender was floated by the Railways for repair and maintenance of ATL devices, it had also given in detail the specifications of the items needed to be repaired, maintained or serviced. The Plaintiff have not challenged this act of the Railways. When the Defendant submitted its bid, it was according to the specifications, etc. mentioned in the tender notice dated 17.05.2012.

Under the provisions of Copyright Act, the owner of a copyright has a right to depict its work in three dimensions or in two-dimensional forms or to communicate the work to the public or to issue copies of the work of the public etc.

Section 15(1) of the Copyright Act states that no copyright exists in a design which is registered under the Design Actsection 15(2) deals with those designs which is capable of being registered under the Designs Act, but has not been so registered, and the design has been used to reproduce more than 50 times using industrial process an article to which such design applies and if it so happens, no copyright can be claimed in such design. 

That a conjoint reading of Section 2(d) of Designs Act, 2000, Section 14(c) and 15(2) of the Copyright Act, 1957, makes it amply clear that where a design of an article is prepared for the industrial production of an article, it is a design and registrable under Designs Act and under Section 14(c), the author of such design can claim copyright, however, since such a design is registrable under the Designs Act, and if such design has been used for production of articles by an industrial process for more than 50 times by the owner of the copyright, or, by any other person with his permission, then such person ceases to have copyright in such design.

The present suit is concerned about the Plaintiff copyright over the industrial drawings of its product and mechanical part thereof namely ATL system.

That the averments in the plaint clearly show that Plaintiff had prepared the engineering drawings for the purpose of production of ATL devices. The industrial drawings are, therefore, or a design of the ATL device which the Plaintiff had supplied to the Railways under a contract given to them by the Railways. The drawings of the ATL devices of the Plaintiff, therefore, are registrable under the Designs Act. The said drawings have not been registered under the Designs Act.

The Plaintiff have also not disputed the fact that while using these engineering drawings, it had used for more than 50 ATL devices by an industrial process and, therefore, it is clear that it has used these engineering drawings for more than 50 times in an industrial process. B

After considering the above, the Hon’ble Court while dismissing the application under Order 39 Rule 1 and 2 of CPC, relied on Section 15(2) of Copyright Act, and stated as under”

“Even if assuming the Plaintiff had a copyright in these engineering drawings, it ceases to have the same. There is other aspect of the present suit as well. The Plaintiff have not made the Railways a party to the suit although in the facts and circumstances of the case it is a necessary party because prima facie it is the Railways who have used the engineering drawing of the ATL devices for inviting tenders.”

“For being entitled for interim injunction under Order 39 Rule 1 and 2, the Plaintiff is required to show a strong prima facie which means the Plaintiff is required to show that it has a right which needs protection. The Plaintiff have failed to show any prima facie case in their favour.”

http://lobis.nic.in/ddir/dhc/DES/judgement/28-07-2017/DES27072017SC14192016.pdf

 

Analyzed and Posted by

Vijay Pal Dalmia, Advocate

vpdalmia@gmail.com

+91 9810081079

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